Bittrex, Inc. v. Trade Bittrex
Claim Number: FA1712001763659
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Trade Bittrex (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tradebittrex.com> (‘the Domain Name’), registered with NameSilo, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2017; the Forum received payment on December 19, 2017.
On December 20, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <tradebittrex.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tradebittrex.com. Also on December 20, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarised as follows:
Complainant owns the BITTREX mark registered in the UK and EU and used since 2014. It owns Bittrex.com.
The Domain Name registered in 2017 has been used in connection with a web site that purports to be a crypto currency company where investors can engage in Bitcoin trading.
The Domain Name is confusingly similar to Complainant’s BITTREX trademark because it wholly incorporates Complainant’s mark and adds only the descriptive term ‘trade’ which is insufficient to mitigate the confusing similarity and, if anything, enhances the sense of connection to Complainant, which operates an exchange that allows customers to trade in crypto currency.
Respondent has no licence or authorisation to use the BITTREX mark and is not commonly known by the Domain Name or ‘bittrex’.
Respondent has not been using the Domain Name in relation to a bona fide offering of goods and services. Rather the Domain Name is being used to compete with Complainant and cause confusion with Complainant’s legitimate site. Such use is trade mark infringement and is not a legitimate non commercial or fair use.
Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name was registered to redirect Internet users to a web site that uses the confusingly similar name TRADE BITTREX in order to confuse users into believing Respondent is Complainant or is otherwise affiliated or associated with Complainant. The nature of this use shows that Respondent had actual knowledge of Complainant and its rights.
The Domain Name was registered and used in bad faith. The use referred to above creates a likelihood of confusion as to the source or affiliation of the site attached to the Domain Name. This competitive use also disrupts Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the BITTREX mark registered in the UK and EU and used since 2014. It owns Bittrex.com.
The Domain Name registered in 2017 has been used for a web site offering competing crypto currency trading services which are not connected to Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's BITTREX mark (which is registered, inter alia in USA and EU for financial services and has been used since 2014), the generic term ‘trade' and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by Complainant). The Panel agrees that the addition of the generic term ‘’trade’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. In fact it may add to confusion as Complainant carries on business trading in cryptocurrencies.
The gTLD .com does not serve to distinguish the Domain Name from the BITTREX mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
The web site to which the Domain Name redirects offers financial services in competition with those of Complainant. It does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that Respondent's use of a confusingly similar domain name to advertise real estate services which competed with Complainant's business did not constitute a bona fide use of goods and services.) As it is commercial it cannot be a legitimate non commercial or fair use.
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel, the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant, as it offers competing financial services under a Domain Name containing Complainant’s BITTREX mark. The use of Complainant's BITTREX word mark in proximity with the term ‘’trade’ for competing financial services shows that it is highly likely that Respondent was aware of Complainant and its business at the time of registration. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the competing business of Complainant. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that Respondent's use of the disputed domain name to advertise car dealerships that competed with Complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tradebittrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 11 2018
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